Bray Web Development, Inc. d/b/a Blue Tangerine Solutions, LLC v. Builder Consulting, LLC
Claim Number: FA1109001407651
Complainant is Bray Web Development, Inc. d/b/a Blue Tangerine Solutions (“Complainant”), represented by Kenneth L. Kunkle of Kunkle Law, PLC, Minnesota, USA. Respondent is Builder Consulting, LLC (“Respondent”), represented by Robert Jackson, Kansas, USA.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <bluetangerinesolution.com>, registered with GoDaddy.com, Inc.
The undersigned certifies that he or she has acted independently and impartially and to the best of his or her knowledge has no known conflict in serving as Panelist in this proceeding.
Antonina Pakharenko-Anderson as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on September 15, 2011; the National Arbitration Forum received payment on September 15, 2011.
On September 16, 2011, GoDaddy.com, Inc. confirmed by e-mail to the National Arbitration Forum that the <bluetangerinesolution.com> domain name is registered with GoDaddy.com, Inc. and that Respondent is the current registrant of the name. GoDaddy.com, Inc. has verified that Respondent is bound by the GoDaddy.com, Inc. registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On September 19, 2011, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of October 11, 2011 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@bluetangerinesolution.com. Also on September 19, 2011, the Written Notice of the Complaint, notifying Respondent of the email addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
A timely Response was received and determined to be complete on October 12, 2011.
On October 17, 2011 an Additional Submission from the Complainant was received by the National Arbitration Forum, which was done in a timely manner according to Rule 7 of the National Arbitration Forum’s Supplemental Rules to ICANN’s Uniform Dispute Resolution Policy.
On October 20, 2011, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Antonina Pakharenko-Anderson as Panelist.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends that it has been using the trademark BLUE TANGERINE SOLUTIONS (“Mark”) without interruption since its foundation in 2006 in relation to providing web design, website development, search engine optimization and marketing services to businesses in the home building industry. Complainant further contends that BLUE TANGERINE SOLUTIONS is an arbitrary mark and is inherently distinctive.
Complainant relies on its trademark rights deriving from its federal registrations, particularly U.S. Trademark Registration No. 3,638,575 for the word mark BLUE TANGERINE SOLUTIONS for “Computer services, namely, designing and implementing webs sites for others” received on June 16, 2009 and Registration No. 3,634,796 for a design mark utilizing BLUE TANGERINE SOLUTIONS for “design, creation, hosting, maintenance of web sites for others,” received on June 9, 2009.
Complainant further relies on its common law rights dating back to the onset of use of the subject trademark.
Complainant further contends that it has prominently displayed its BLUE TANGERINE SOLUTIONS Mark in its advertising and promotional materials and uses that mark to identify Complainant as the source of its services.
Complainant is recognized in the media as BLUE TANGERINE SOLUTIONS and spends significant resources developing consumer awareness and goodwill by promoting its services under its mark.
Complainant registered the domain <bluetangerinesolutions.com> on November 21, 2006 and immediately began using it without interruption to direct internet users to a website to promote its various services.
Respondent registered the domain name <bluetangerinesolution.com>, which is the subject of the Complaint, on January 21, 2008, well after the Complainant’s established rights in the BLUE TANGERINE SOLUTIONS Mark.
Complainant further contends that the website located at the <bluetangerinesolution.com> domain name appears specifically designed to direct visitors to the websites of Respondent.
Complainant contends that Respondent is not authorized or licensed by Complainant to use the BLUE TANGERINE SOLUTIONS mark in any way. Further, Complainant argues that Respondent is not commonly known by the disputed domain name where the WHOIS information identifies “Builder Consulting, LLC” as the registrant.
Based on these contentions, Complainant further alleges that:
a. Respondent’s registered domain name is confusingly similar to the BLUE TANGERINE SOLUTIONS trademark;
b. Respondent has no rights or legitimate interests in its registered domain name.
c. Respondent registered and uses its domain in bad faith.
B. Respondent
Respondent states that the domain in dispute was purchased for a client website as the solution to market the Blue Tangerine products to consumers in the United States. The client contracted development of a website to market the Blue Tangerine products on January 23, 2008, which is more than 18 months before Bray Web Development filed or obtained the service mark for a similar name.
The purchase of the domain name <bluetangerinesolution.com> on January 23, 2008 correlates with the agreement for Blue Tangerine Product Solutions dated January 23, 2008, and signed by Gia Tidle.
Respondent further contends that at the time when the domain was purchased, it was pointed to the generic Builder Consulting default page listing examples of websites, contact information and contacts as there was no website to showcase. The domain was registered without private registration and pointed to the standard hosting location for all new clients.
Respondent contends that the example websites provided by Bray Web Development show only a small portion of the work, clients and focus of Builder Consulting. Bray Web Development is not a competitor, does not conduct business in the same market, has none of the same clients and for some unknown reason decided to market website services using a random fruit (Blue Tangerine).
According to Respondent, Complainant is a company of a completely different level, particularly offering low-end template websites, which is a significantly lower product than what Builder Consulting, LLC offers.
Builder Consulting, LLC work ranges from $7,500 to $100,000+ with more than 2 million dollars per year in custom online development, consulting, database, training and application development work worldwide.
Respondent contends that Bray Web Development, d/b/a Blue Tangerine Solutions appears to covet or be in the process of attempting to target Builder Consulting, LLC clients through Pay Per Click advertising on search engines, which shows the intent of Bray Web development to confuse or target customers, companies or anyone online looking for Builder Consulting.
Further, Respondent contends that there are no search results displaying any Builder Consulting, LLC website or the BlueTangerineSolution.com client website marketing solutions for Blue Tangerine products since the Builder Consulting, LLC client, Blue Tangerine Product Solution, has marketed their Blue Tangerine product solution on social networks, such as Facebook, Google Blogspot, Twitter and other online sources using the same tag line and phrase ‘Your Solution for Blue Tangerine Products’ since 2008.
Respondent clarifies that the products are body care, lotion, skin care, health products, candles and fragrances with no relation to Bray Web Development or its Blue Tangerine Solutions dba, and thus there is no potential for confusion by a client of either company.
Respondent further notes that the service mark obtained by Bray Web Development postdates the registration of the <bluetangerinesolution.com> domain name.
In response to factual and legal allegations made in Complaint, Respondent alleges that:
a. Respondent states that the <bluetangerinesolution.com> domain name hosts a clear, simple website with content completely unrelated to Bray Web Development services of template websites. The service mark for BLUE TANGERINE SOLUTIONS incorporating the ‘fruit’ slice obtained June 2009 does not have any bearing as it is an unrelated product in a different market without any similarity in look, content or target audience.
b. Respondent claims that the domain name at issue was purchased for a client website as a “solution to market the Blue Tangerine products to consumers in the United States.” Respondent has been known as Blue Tangerine since 1986 providing exceptional products and personal care solutions worldwide. There are currently more than 800 websites online selling Blue Tangerine products and solutions.
c. The domain was registered in good faith to provide online solutions to purchase, market and obtain Blue Tangerine products. The domain was parked at a default, under-construction page showing Builder Consulting, LLC products, customers, Blog posts and related information while the website was under construction. The live website at the <bluetangerinesolution.com> domain name has no affiliation, misrepresentation or competing services, products or potentially confusing aspects that could mislead anyone searching for Bray Web Development or its Blue Tangerine website.
C. Additional Submissions
In its Additional Submission (Complainant’s Supplemental Materials) filed with the National Arbitration Forum on October 17, 2011, Complainant contends that Respondent has created a fiction in an attempt to deceive the Panel, which is supported by the following:
1. The website currently resolving from the domain <bluetangerinesolution.com> was not operational as of the filing of the Complaint in this matter. Even as recently as September 20, 2011, portions of the newly invented <bluetangerinesolution.com> contained filler text.
2. According to <archive.org>, as recently as February 2011 the website was not functional and contained only a placeholder from <godaddy.com>.
3. The validity of the contract with the client submitted by Respondent is dubious in view of a number of discrepancies.
4. 4. The blog provided in support of Respondent’s claims of bona-fide use was first posted on September 19, 2011 and the submission provided by Respondent has been modified to omit information concerning the archive history of the site.
5. The Facebook page provided in support of Respondent’s claim of bona-fide use was first posted on September 19, 2011.
6. The website identified in Respondent’s response supporting its claim that “Blue Tangerine Products” have been sold since 1986 is in fact a screenshot from the website <kennethturner.com>.
Complainant established that it holds valid trademark rights deriving from U.S. Trademark Registration No. 3,638,575 for the word mark BLUE TANGERINE SOLUTIONS for “Computer services, namely, designing and implementing webs sites for others” filed on November 4, 2008 and registered on June 16, 2009 and Registration No. 3,634,796 for a design mark utilizing BLUE TANGERINE SOLUTIONS for “design, creation, hosting, maintenance of web sites for others, filed on November 4, 2008 and registered on June 9, 2009.
Complainant further contends that, in addition to its registered trademark rights, it “asserts and relies upon its common law trademark rights in the BLUE TANGERINE SOLUTIONS mark”.
Complainant has submitted several pieces of evidence to show that its rights in the mark date back to 2006 when it began operating under the BLUE TANGERINE SOLUTIONS mark, particularly:
- a WHOIS registrant data form showing that Complainant registered the <bluetangerinesolutions.com> domain name on November 21, 2006;
- an article about Complainant’s business that appeared in the Brevard Business News from March 22, 2010, which discusses Complainant’s history and its change to the BLUE TANGERINE SOLUTIONS name and mark in 2006;
- a list of past webinars that have been put on by Complainant, some of which date back to early 2008.
In its affidavit, Complainant states that it spends in excess of $20,000 per year promoting its services and has generated gross sales in excess of $2.5 million under its BLUE TANGERINE SOLUTIONS mark.
In support of its allegation that the domain in dispute was purchased for a client website as the solution to market the Blue Tangerine products to consumers in the United States, Respondent submitted a copy of the contract signed on January 23, 2008. Although the date of this contract is more than 18 months before Bray Web Development obtained registration for its service mark, the contract date postdates the common law rights acquired by Complainant through genuine use of its mark.
Respondent contends that the purchase of the domain name <bluetangerinesolution.com> on January 23, 2008, correlates with the agreement for Blue Tangerine Product Solutions dated January 23, 2008, and signed by Gia Tidle.
Respondent did not provide any further evidence related to said agreement. At the same time, Complainant submitted further evidence in its Additional Submission which show that the signor of the agreement on behalf of the alleged “client”, Gia Tidle, may be an employee/representative of Respondent, or another person related to the company of Respondent, which alone makes said agreement dubious, and thus it can not be taken into account as proper evidence. Therefore, its date is also irrelevant.
The Panel finds that Respondent does not hold valid rights to the similar sign “Blue Tangerine Solution”.
The Panel also finds that evidence submitted by Respondent in support of its allegations that the domain <bluetangerinesolution.com> has been marketed online since January 2008 on Facebook, Twitter, Google and via a custom designed website created by Builder Consulting, LLC, and that Respondent has been marketing Blue Tangerine products and solutions opening the US market in 2008 through their website at the <bluetangerinesolution.com>, to be insufficient, particularly as they do not establish the time when the products started being offered or were offered through their website.
Furthermore, credibility of this evidence is undermined by further evidence submitted by Complainant in its Additional Submission, particularly extracts from <archive.org> showing that, as recently as February 2011, the website was not functional and contained only a placeholder from <godaddy.com>. Claimant also notes that the URL was previously used by Respondent in late 2008 to redirect visitors to the URL <stupidwebdesign.com> which contained negative comments of Claimant’s services. This is supported by a respective evidence, such as a screenshot of said page from the <archive.org> resource.
In support of bona-fide use, Respondent submitted as evidence a blog page, a respective Facebook page and a screenshot from their website.
However, based on further evidence submitted by Complainant, it is established that both the said blog and the Facebook page were first posted on September 19, 2011.
It is also established that the website identified in Respondent’s response supporting its claim that “Blue Tangerine Products” have been sold since 1986 is in fact a screenshot from the website at the domain name <kennethturner.com>. It is further established that the <kennethturner.com> domain name used by Respondent makes no reference to the Blue Tangerine brand.
The Panel also finds that Respondent failed to prove its allegation that the parties are not competitors.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
The Panel finds that Complainant’s trademark ownership grants it Policy 4(a)(i) rights in the asserted mark that date back to the filing date of November 4, 2008. See Intel Corp. v. Macare, FA 660685 (Nat. Arb. Forum Apr. 26, 2006) (finding that the complainant had established rights in the PENTIUM, CENTRINO and INTEL INSIDE marks by registering the marks with the USPTO); see also Hershey Co. v. Reaves, FA 967818 (Nat. Arb. Forum June 8, 2007) (finding that the complainant’s rights in the KISSES trademark through registration of the mark with the USPTO “date back to the filing date of the trademark application and predate [the] respondent’s registration”).
The Panel also finds that Complainant has presented sufficient evidence to establish common law rights in the BLUE TANGERINE SOLUTIONS mark under Policy ¶ 4(a)(i) that date back to 2006. See Artistic Pursuit LLC v. calcuttawebdevelopers.com, FA 894477 (Nat. Arb. Forum Mar. 8, 2007) (concluding that the complainant had established common law rights in the ARTISTIC PURSUIT mark by using the mark in commerce before Respondent registered the disputed domain name).
The Panel finds that the <bluetangerinesolution.com> domain name is confusingly similar to the BLUE TANGERINE SOLUTIONS mark in view of the fact that the disputed domain name merely removes the letter “s” from the SOLUTIONS portion of the mark while adding the generic top-level domain (“gTLD”) “.com.” The domain name in question also omits the spaces between the terms of the mark. The Panel finds that such changes do not help avoiding confusing similarity with Complainant’s mark.
Therefore, the Panel finds that Respondent’s disputed domain name is confusingly similar to Complainant’s mark under Policy ¶ 4(a)(i). See Universal City Studios, Inc. v. HarperStephens, D2000-0716 (WIPO Sept. 5, 2000) (finding that deleting the letter “s” from the complainant’s UNIVERSAL STUDIOS STORE mark did not change the overall impression of the mark and thus made the disputed domain name confusingly similar to it); see also Bond & Co. Jewelers, Inc. v. Tex. Int’l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant’s mark under Policy ¶ 4(a)(i)).
Respondent made no contentions under Policy 4(a)(i).
The Panel finds that Policy 4(a)(i) has been satisfied.
The Panel finds that Complainant has made a prima facie case showing that Respondent does not have rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Thus, the burden of proof shifts to Respondent to show to the contrary. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006) (holding that the complainant must first make a prima facie case that the respondent lacks rights and legitimate interests in the disputed domain name under UDRP ¶ 4(a)(ii) before the burden shifts to the respondent to show that it does have rights or legitimate interests in a domain name).
The Panel finds that Respondent is not commonly known by the <bluetangerinesolution.com> domain name where the WHOIS information identifies “Builder Consulting, LLC” as the registrant. See Tercent Inc. v. Lee Yi, FA 139720 (Nat. Arb. Forum Feb. 10, 2003) (stating “nothing in Respondent’s WHOIS information implies that Respondent is ‘commonly known by’ the disputed domain name” as one factor in determining that Policy ¶ 4(c)(ii) does not apply).
Based on the screen-shot evidence submitted by Complainant showing that Respondent’s <bluetangerinesolution.com> domain name resolves to Respondent’s own website-building business that is in direct competition with Complainant, and in view of the additional evidence showing the past use of the subject URL to redirect visitors to another URL containing negative comments of Claimant’s services tarnishing its reputation, the Panel finds that such use of a confusingly similar domain name is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) or a legitimate noncommercial or fair use under Policy 4(c)(iii). See Florists’ Transworld Delivery v. Malek, FA 676433 (Nat. Arb. Forum June 6, 2006) (holding that the respondent’s use of the <ftdflowers4less.com> domain name to sell flowers in competition with the complainant did not give rise to any legitimate interest in the domain name); see also Computerized Sec. Sys., Inc. v. Hu, FA 157321 (Nat. Arb. Forum June 23, 2003) (“Respondent’s appropriation of [Complainant’s] SAFLOK mark to market products that compete with Complainant’s goods does not constitute a bona fide offering of goods and services.”).
The Panelist thus finds that Policy 4(a)(ii) has been satisfied.
Based on the submitted evidence establishing that Respondent’s disputed domain name resolves to a website that offers directly competing web-building services, as well as third-party links to other website-building and marketing services, the Panel finds that Respondent’s use of the disputed domain name falls within the confines of Policy 4(b)(iii). See DatingDirect.com Ltd. v. Aston, FA 593977 (Nat. Arb. Forum Dec. 28, 2005) (“Respondent is appropriating Complainant’s mark to divert Complainant’s customers to Respondent’s competing business. The Panel finds this diversion is evidence of bad faith registration and use pursuant to Policy 4(b)(iii).”); see also Marriott Int’l, Inc. v. MCM Tours, Inc., FA 444510 (Nat. Arb. Forum May 6, 2005) (“The Respondent is a travel agency and thus operates in the same business as the Complainant. The parties can therefore be considered as competitors. The Panel thus finds that the Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor, which constitutes evidence of registration and use in bad faith under Policy 4(b)(iii).”).
Furthermore, Respondent’s competing use of the domain name that contains Complainant’s mark constitutes an attempt to attract, for commercial gain, Internet users to its website or other on-line location by creating a likelihood of confusion with the Complainant's mark, which is further evidence of bad faith registration and use under Policy 4(b)(iv). Therefore, the Panel finds that Respondent registered and is using the disputed domain name in bad faith under Policy ¶ 4(b)(iv). See MathForum.com, LLC v. Weiguang Huang, D2000-0743 (WIPO Aug. 17, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent registered a domain name confusingly similar to the complainant’s mark and the domain name was used to host a commercial website that offered similar services offered by the complainant under its mark); see also Associated Newspapers Ltd. v. Domain Manager, FA 201976 (Nat. Arb. Forum Nov. 19, 2003) (“Respondent's prior use of the <mailonsunday.com> domain name is evidence of bad faith pursuant to Policy ¶ 4(b)(iv) because the domain name provided links to Complainant's competitors and Respondent presumably commercially benefited from the misleading domain name by receiving ‘click-through-fees.’”).
The Panelist thus finds that Policy 4(a)(iii) has been satisfied.
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <bluetangerinesolution.com> domain name be TRANSFERRED from Respondent to Complainant.
Antonina Pakharenko-Anderson, Panelist
Dated: November 03, 2011
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